Archive for July, 2011

The date of the AIPLA Electronics and Computer Patent Law Summit in St. Paul, Minnesota on August 16th is approaching quickly. One particularly interesting panel of note will be the one dealing with Therasense v. Becton, Dickinson and Co. that will reunite John Whealan and Ray Chen, who both took part in the en banc oral argument of Therasense.

You can view the details of the program at this link to the AIPLA brochure.

Senior Judge Glenn Archer, Jr. passed away on July 27th. The Federal Circuit posted this announcement on its web site:

The Honorable Glenn L. Archer, Jr., died at Friendship Village’s Hospice of the Valley in Tempe, Arizona on July 27, 2011. Chief Judge Rader, in a message to the court announcing Judge Archer’s death said: “ Glenn was our third Chief Judge and the first Chief Judge of our court to start his judicial career with the Federal Circuit. He led our court through some of our most challenging transitional years. When we recall Glenn, we will speak of his magnificent service including his tenure as our Chief Judge, but we will mostly remember that his heart was grand enough to comprehend the hardships and challenges of every person he encountered. His great compassion made him a great judge and a great leader.”

Judge Archer was appointed to the Court of Appeals for the Federal Circuit by President Ronald Reagan and assumed duties as Circuit Judge on December 23, 1985. He became Chief Judge on March 18, 1994, and served in that capacity until December 24, 1997, when he assumed senior status. While in senior status, Judge Archer continued to serve on the Federal Circuit and often sat by designation with the Ninth Circuit in both Pasadena and San Francisco, California.

Prior to his twenty-five years on the court, Judge Archer served as Assistant Attorney General, Tax Division, United States Department of Justice from 1982 to 1984. During his time in private practice, Judge Archer was an associate in the Washington, DC law firm of Hamel, Park, McCabe and Saunders from 1956 to1960 and a partner from 1960 to 1981. Judge Archer served as First Lieutenant in the Judge Advocate General’s Office, United States Air Force from 1954 to 1956. He received a B.A. from Yale University in 1951 and a J.D., with honors, from George Washington University Law School in 1954.

Another interesting aspect of the recent Fuzzysharp v. 3DLabs oral argument was the attention paid to the Research Corp. Technologies v. Microsoft case decided back in December 2010. In that case, Chief Judge Rader wrote for the court:

The invention presents functional and palpable applications in the field of computer technology. These inventions address “a need in the art for a method of and apparatus for the halftone rendering of gray scale images in which a digital data processor is utilized in a simple and precise manner to accomplish the halftone render-ing.” ’310 patent col.3 ll.33-40. The fact that some claims in the ’310 and ’228 patents require a “high contrast film,” “a film printer,” “a memory,” and “printer and display devices” also confirm this court’s holding that the invention is not abstract. Indeed, this court notes that inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act.

This court also observes that the claimed methods incorporate algorithms and formulas that control the masks and halftoning. These algorithms and formulas, even though admittedly a significant part of the claimed combination, do not bring this invention even close to abstractness that would override the statutory categories and context. The Supreme Court has already made abundantly clear that inventions incorporating and relying upon even “a well known mathematical equation” do not lose eligibility because “several steps of the process [use that] mathematical equation.” Diehr, 450 U.S. at 185. Indeed, the Supreme Court counseled:

In determining the eligibility of respondents’ claimed process for patent protection under section 101, their claims must be considered as a whole. It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis. This is particularly true in a process claim because a new combination of steps may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.

Id. at 188.Borrowing from the reasoning of the Supreme Court in Diehr, this court observes that the patentees here “do not seek to patent a mathematical formula. Instead, they seek patent protection for a process of” halftoning in computer applications. Id. at 187. Moreover, because the inventions claimed in the ’310 and ’228 patents are directed to patent-eligible subject matter, the process claims at issue, which claim aspects and applica-tions of the same subject matter, are also patent-eligible.

(emphasis added)

Refreshingly, Judges O’Malley and Reyna noted that Research Corp. is precedent and therefore must be followed. Judge O’Malley first commented: [Listen]. Indeed, she commented that in view of Research Corp. abstract ideas are only to be found in the most rare of circumstances, essentially: [Listen].

It has already been more than six months since Research Corp. was decided. The Federal Circuit has noted that it is precedent that must be followed. Will the PTO’s Subject Matter Eligibility Guidelines committee follow suit with updated guidelines?

The recent oral argument in Fuzzysharp Technologies, Inc. v. 3D Labs, Inc., Ltd. is extremely interesting if you are involved in the patenting of businesss methods and computer software. No decision has been issued in the case; but, the oral argument in and of itself is informative. The issue on appeal concerns whether the district court was in error in granting a summary judgment of invalidity under 35 U.S.C. §101 for the asserted claims. There are five claims at issue with claim 1 of the 6,618,047 patent reading as follows:

1. A method of reducing the visibility related computations in 3-D computer graphics, the visibility related computations being performed on 3-D surfaces or their sub-elements, or a selected set of both, the method comprising:

identifying grid cells which arc under or related to the projections or extents of projections associated with at least one of said 3-D surfaces or their sub-elements;

comparing data associated with said at least one of 3-D surfaces or their sub-elements with stored data associated with the grid cells;

determining which of said at least one of 3-D surfaces or their sub-elements is always invisible or always visible to a viewpoint or a group of viewpoints by projection based computations prior to a visibility computation; and

ignoring said determined at least one of the 3-D surfaces or their sub-elements during said visibility computation.

Judge Bryson had a couple of interesting inquiries that were directed toward claiming internal processing of data by a computer, presumably without post-solution activity by the computer (such as displaying). You can listen to his comments [here] and [here].

The USPTO has a new public training portal that allows the public to view training courses similar to the courses that examiners take. The home page states:

The USPTO Training Portal offers, via webcast, the same classes that USPTO patent and trademark examiners are required to take. The U.S. Department of Commerce, NTIS, in agreement with the United States Patent and Trademark Office, introduces the USPTO Training Portal!

The patent process is not simple. There are numerous scientific and legal issues to navigate, not to mention specific language and techniques that can help or hurt your application. You may not know all the ins and outs, but the patent examiner does. Why? Because the examiner has specialized training!

Now you can take the same courses as the examiners!

Some of the courses are available for a nominal fee. Others are free. You can check out the site here: [Link].

The Honorable William C. Bryson was formerly a Deputy Solicitor General of the United States. He argued many times before the Supreme Court of the United States between 1980 and 1994. I couldn’t find any patent, trademark, or copyright cases that Judge Bryson argued. Most of his cases seemed to have dealt with criminal procedure.

The other weekend I discovered that MIT has an “opencourseware” site where it has posted videos of different semester long courses. Apparently MIT has been doing this for many years — I’m just late to the party in noticing it. If you like to learn new subjects, want an update on a course that you first took decades ago, or maybe have a child thinking about majoring in science or engineering, you can check out the site at this link: [Link]. It looks like other colleges have similar videos posted on YouTube; but, I think MIT has the most organized approach with its site.

In Diamond v. Diehr, Justice Rehnquist once prompted the government’s counsel with the question ”Incidentially, what is an algorithm?” [Listen]. MIT has a course to answer that question should it ever arise again: [Introduction to Algorithms].

The Honorable Daniel M. Friedman passed away yesterday at the age of 95. The Federal Circuit posted this announcement today:

Circuit Judge Daniel M. Friedman Dies at the Age of 95

The Honorable Daniel M. Friedman died at his home on Wednesday July 6, 2011. Chief Judge Rader, in a message to the court announcing Judge Friedman’s death to the court, said: “ Yesterday we lost one of the grandest and best judges to ever grace this court – the last of the original members of the United States Court of Appeals for the Federal Circuit. Indeed he was instrumental in the creation of our court. Dan was also the last Chief Judge of the oldest Circuit Court in United States history, the United States Court of Claims. Dan left us on the day before we open the renovated courtroom that preserves the Court of Claims legacy. Our flag will fly at half mast for three days to honor Dan Friedman. I mourn with you all.”

Judge Friedman was appointed Chief Judge of the Court of Claims by President Jimmy Carter in 1978. When the Court of Claims merged with the Court of Customs and Patent Appeals to form the U. S. Court of Appeals for the Federal Circuit on October 1, 1982, Judge Friedman was elevated to the newly-established court on which he was deemed the first in seniority just below the Chief Judge. Judge Friedman assumed the status of senior judge on November 1, 1989, and continued to actively serve on the Federal Circuit and also to sit by designation with other Circuits. Judge Friedman authored over 470 opinions for the Federal Circuit, over seventy opinions for the Court of Claims, and over 160 opinions when sitting by designation with other U. S. circuit courts of appeals.

Judge Friedman’s legal career spanned almost seven decades, virtually all of it in public service. He began with a position at the Securities and Exchange Commission in the early 1940’s. From 1942 to 1946, he served in the U. S. Army in Europe. Returning to the SEC at the conclusion of World War II, he worked there for five more years before joining the Antitrust Division of the Department of Justice, working there from 1951 to 1959. In 1959, he joined the Office of the Solicitor General, serving as an Assistant Solicitor and First Deputy Solicitor from 1959 to 1978, where he served twice as Acting Solicitor General and argued eighty cases at the Supreme Court.

Judge Friedman was an active member of the court even after taking senior status. And, he continued to sit by designation with the other Courts of Appeal, including ten separate occasions between 2006 and 2010.

Judges Bryson and Newman had the following comments today before holding oral arguments: [Listen] and [Listen].

Judge Reyna heard his first oral argument at the Federal Circuit today. While he previously took part in the Therasenseen banc decision, that case was argued before he was sworn in to the bench.

Chief Judge Rader had these welcoming remarks: [Listen]. Judge Reyna’s first case was fittingly an appeal from the Court of International Trade, PS Chez Sidney v. USITC. The subject matter appeared to deal with crawfish.